All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.

Friday, October 14, 2011

BPAI finds floor covering art is not analogous to contact lens art

Takeaway: In a chemical composition application, the BPAI found that a reference in the field of floor coverings was not analogous art to the other two references related to contact lenses. The Examiner argued that reference in question taught polymer branching, a feature which was applicable in the field of contact lenses as well as floor coverings. However, the BPAI focused on reasons why an inventor of contact lens would look to a floor covering reference to solve a problem, finding that the hypothetical inventor would not. The Board noted that "underlying similarity in a scientific principle of operation does not necessarily mean that an inventor in one field would have considered a reference pertinent which had applied the
principle in other fields." (Ex parte Devlin, BPAI 2011.)

1. A crosslinkable polyurea prepolymer ... comprising the components of:
(e) at least one aminoalkyl polyalkylene glycol of formula (1) ...
(f) optionally at least one organic di- or poly-amine, wherein the organic diamine is ...
(g) optionally at least one diisocyanate selected from the group consisting of ...
(h) at least one polyisocyanate having at least three isocyanate groups ...

The Examiner rejected as obvious using a combination of three references: two in the field of opthalmic devices such as contact lenses, and one in the field of floor coverings.

The Examiner asserted that the primary reference (Stockwell) taught elements e through g and part of h. The Examiner then used two additional references to modify the primary reference, resulting in the remainder of element h. The Examiner relied on specific teachings in the two secondary references as reasons to combine: the first modification (Bany) enhanced dimensional stability of contact lenses, while the second modification (Rosenberry) provided "superior abrasion and gouge resistance."

In the Appeal Brief, the Applicant focused on attacking the rationale for combining the references. The Applicant noted that the abrasion resistance characteristic of Rosenberry was an advantage to a floor covering, while the dimensional stability feature provided by the other two references was an advantage to contact lenses. The Applicant argued that one would not combine features when they provided these different types of advantages.

In the Answer, the Examiner defended his use of the floor covering reference (Rosenberry) by focusing on the technical properties of the chemical compound itself rather than the use of the compound, as follows:

[O]ne of ordinary skill would understand the relevance of Rosenberry et al. – it teaches a suitable method for enhancing the mechanical properties of polyurethane based on acrylate functional prepolymer. The mechanical properties are enhanced by incorporating additional acrylate functionalities. The fact that Rosenberry et al. uses the prepolymer as a floor coating as opposed to a contact lens does not take away from the fact that it has been rendered obvious to increase the amount of branching of the final polymer, which is to be used as a contact lens. Bany et al. has already established this relationship.
(Emphasis added.)

The Board found that the floor covering reference (Rosenberry) was not analogous art to the other two contact lens references. First, the fields of invention were clearly not the same. Second, the specific problem identified by the Examiner in the primary reference Stockinger was dimensional stability, and this was also the problem that the first secondary reference (Bany) was concerned with dimensional stability. Rosenberry, however, was not at all concerned with this problem, but rather on "superior gloss retention, abrasion, gouge and stain resistance surfaces.”

On appeal, the Board was not persuaded by the Examiner's focus on the similarity of the technical features as a reason to combine:

The Examiner’s reliance on the idea of branching of polymers and thermosets does not provide a reason why Rosenberry would have been considered by an inventor of contact lenses considering the dimensional stability concerns of Stockinger and Bany. Even accepting that there was similarity at an underlying level of scientific principle, that similarity does not answer the question whether a contact lens designer would have looked to Rosenberry for an answer to the dimensional stability problem. Put another way, underlying similarity in a scientific principle of operation does not necessarily mean that an inventor in one field would have considered a reference pertinent which had applied the principle in other fields.

The Board cited to In re Van Wanderham as support for its reasoning.

The Van Wanderham case is illustrative. In Van Wanderham, an inventor claimed a rocket propelled missile booster cryogenic liquid propellant flow system having an insulating layer. Prior art that described material used in making cutlery was argued to show obviousness. The court found the determination “not without difficulty,” but found the reference not analogous, explaining that “the difficulty arises from not considering the subject matter as a whole and instead focusing on the scientific principle involved.” In re Van Wanderham, 378 F.2d 981, 988 (CCPA 1967).

My two cents: I don't practice in the chemical arts, but the Board's reasoning resonates with me. By framing the discussion in terms of "scientific principles," I think the Board articulated what's wrong with focusing solely on technical features when making a combination.

Namely, at some level, almost all references are similar. Chemical compounds are used in all types of products and fields, as are mechanical parts, as are electronic components. So if we look for reasons to combine at this high level, then all prior art is fair game for combination. The analogous art doctrine exists to draw the line somewhere to say that No, a hypothetical inventor would not combine such disparate references.

The Board helped the Applicant out a bit by considering the issue of non-analogous art. The Applicant did make arguments against the rationale to combine, but did not specifically raise the non-analogous art doctrine.

The Board's cite to In re Van Wanderham was unusual. The Applicant didn't mention the case, and it doesn't appear to be referenced in any other BPAI decision.

11 comments:

Classic Examiner BS -- if you abstract the field enough, anything is within the same field of endeavor.

I've had Examiner's come up with alleged "fields of the endeavor" that encompassed most of the references generqated by three different USPTO tech centers.

What is a shame is that the primary and/or SPE and/or appeal conference didn't step in to correct this issue before Appellant had to waste time and money going to the BPAI.

"The Board's cite to In re Van Wanderham was unusual. The Applicant didn't mention the case, and it doesn't appear to be referenced in any other BPAI decision."It seems to me that someone on the BPAI was acting like an attorney and actually researching the legal issues -- this is to be applauded.

I see that I am not the only one dealing with Examiners who define the field of endeavor so generically that it encompasses hugely different arts. It is a constant battle with Examiners, even when you point out that the Examiners' actions contradict the MPEP in terms of how one should determine analogousness.Again, this is another reason why the Examiner should be forced to explicitly define the level of skill in the art so that the Examiner is forced to explain how and why one of the explicitly determined level of skill would have found the references to have been analogous.

It appears from this brief summary that the claims were directed to "compositions", a specific composition to be exact, not to "contact lenses" per se. The fact that the applicant happened to use the composition in contact lenses in their spec is completely irrelevant, the claims constrol the analogous arts test, not the spec. For that reason, the analogous arts question may well be resolvable in favor of finding this instant reference to be analogous art. Surely compositions of the type claimed may well have a problem with scuffing which the reference in question may well resolve regardless of whether the end use is a floor covering or a contact lens.

I will however not try to resolve the analogous arts test for this application as that involves getting further into the facts than I care to wade. If I had to guess I would ultimately not find it to be analogous art, but I may have, it's a factual issue and I'm not getting myself into the issue deep enough to know.

However, I notice in this case an unfortunate effect of the board raising a new issue not on appeal. The issue they made their holding on was neither before them and was never even addressed by the examiner. Perhaps had applicant raised it below then the examiner would have laid out why it was analogous art better or withdrawn the rejection. I realize that the board raises issues sua sponte for all kinds of different reasons and there are good reasons to let them do so, but with all the hubbub lately about applicants getting screwed by the board raising a new grounds of rejection I don't find it particularly inapparopriate to note that the examiner should be given a chance to address the board's new issue and easily request rehearing rather than go through the long drawn out request for rehearing process.

"Classic Examiner BS -- if you abstract the field enough, anything is within the same field of endeavor."

To be sure, the applicant themselves abstracted the field enough by not claiming contact lenses. That shifts the field of endeavor from "contact lenses" to "A crosslinkable polyurea prepolymer". And I think that is probably why the applicant did not argue this in the first instance.

"...but with all the hubbub lately about applicants getting screwed by the board raising a new grounds of rejection I don't find it particularly inapparopriate to note that the examiner should be given a chance to address the board's new issue..."

Lulz. The Board's been covering the a$$ of the examining corps for decades by affirming sh!tty rejections with undesignated new grounds, and now you're whining that the examiner should be given another opportunity to show how ridiculous he/she is by explaining why prior art that doesn't even meet the basic statutory requirement of section 103(a) is analogous?

"The fact that the applicant happened to use the composition in contact lenses in their spec is completely irrelevant, the claims control the analogous arts test, not the spec."

I'm pretty sure that's only half correct, as the claims don't control the analogous arts test either. The question is whether the skilled person would combine the references to get to the claimed invention. Here, there were two contact lens references that provided the starting point for the examiner's analysis. The examiner then used a floor covering reference to finish the rejection. You need a good reason why the skilled person (in either field of endeavor) would combine the references to get the claimed invention. It doesn't matter what the invention is limited to - there is no plausible reason (other than hindsight based on the applicant's disclosure) why someone working in ANY field would put these references together.

>I'm pretty sure that's only half correct, >as the claims don't control the analogous >arts test either. The question is whether >the POSITA would combine the references to >get to the claimed invention

I have a slight quibble with your statement.

Whether a POSTIA would combine the refs is the *ultimate* question of [non]obviousness. Whether or not the references can even be used is a *threshold* question, answered by the analogous art doctrine.

Because analogous art is only a threshold, references can pass the analogous art test and still fail obviousness. The analogous art doctrine appears to be a coarse filter that says "hey, these come from such different fields that there is absolutely no reason for a POSITA to combine them".

"Because analogous art is only a threshold, references can pass the analogous art test and still fail obviousness."

Agreed.

" The analogous art doctrine appears to be a coarse filter that says 'hey, these come from such different fields that there is absolutely no reason for a POSITA to combine them'."

Slight quibble. Non-analogous art (i.e. prior art that is not pertinent to the subject matter sought to be patented) is not even within the scope and content of the prior art. It is not within the knowledge of one of ordinary skill in the art to which said subject matter pertains.

I'm beginning to think that the poster who harps on the failure of the examiners to resolve the level of ordinary skill may be on to something.

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